Slanted against him

Another not-safe-for-work story is out there about a trademark registration denied under Section 2(a) of the Lanham Act as “immoral or scandalous.” John Welch and Marc Randazza address the issue brilliantly here and here.

No trademark registrations for an “all-Asian American band”: How Asian is too Asian under the Lanham Act?

Well, in April of last year, in fact, I wrote about the trademark application for THE SLANTS by a musical band called The Slants. I noted how the certain obviously derisive trademarks, supposedly forbidden under 2(a), aren’t always. It seems to depend on how the political winds blow.

That post was so “brilliant” that I ended representing The Slants pro bono on a new application. And now, once again, it’s up to the TTAB on this. With, yes, a different slant.

In fact, there are many trademark registrations for the word SLANT. But what if the person who wants to register the mark is Asian? According to the PTO, then the mark may not be registered — or at least not if, in the past, he has been too Asian about being Asian.

The applicant, leader of the musical band The Slants (Simon Tam), seems to be the victim of a policy that has at once narrowed, and broadened, the concept of forbidden “disparaging” trademarks. It has broadened the concept to include any mark that COULD be deemed disparaging, or any user that may ever have, in the past, made “disparaging use” of an otherwise inoffensive word. And it has narrowed the standard so that, as set out in these documents, no matter what Simon Tam does or says in a trademark application, he, personally, is — by all indications — barred forever from registering these words, no matter how he uses them.

8 comments

That’s funny, and almost inevitable when applying the “scandalous” label to a comon word that is a slur only under certain conditions. A German band can register The Slants, a British band can register The Slants. Only an Asian band (members of the group intended to be protected) is barred.

I haven’t looked through your brief yet (it’s almost Chrismas–the most boring holiday of the year between the hours of 10:00 AM and 3:00 PM, so maybe I’ll look at it), but I see an added irony. For at least a generation, oppressed groups have tried to sap the power of slurs by adopting the terms themselves (“queer” and “bitch” as prominent examples). By hampering a group’s ability to defend itself in this way, the TTAB serves to promote the scandalousness of the term they are trying to protect us from.

That is unbelievable. You’re doing good work here (and you write quite lucidly as well). Can trademarks be sold like property? If so, why not find a Native American band to trademark the name “Slants,” your clients trademark “The Apples,” and then they trade with one another? They could both describe the use as “entertainment in the nature of live performances by a musical band” but the examining attorney’s arguments would collapse (not that they aren’t precollapsed).

Thank you, Jo. We did consider such a subterfuge, but it would have really been an inappropriate acknowledgment of the impropriety of this approach by the PTO. It could have been done ethically — there are other band members — but it did not seem like the way to go.

The Title, the Blog and the Blogger

The question of whether consumers are likely to be confused is the signal inquiry that determines if a trademark infringement claim is valid. I write here about trademark law, copyright law, brands, free speech (mostly as it relates to the Internet) and legal issues related to blogging. That may sound like a lot, but it's just a blog.

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